Kohler Co. v. Phil Coons
Claim Number: FA0510000589518
PARTIES
The Complainant is Kohler Co., Chicago, Illinois, United States of America
The Respondent is Phil Coons, Keizer, Oregon, United States of America.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <kohlerengineparts.com>, registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict serving as Panelist in this proceeding.
Edward C. Chiasson, Q.C., as Panelist.
PROCEDURAL HISTORY
The Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 1, 2005.
On October 31, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <kohlerengineparts.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that the Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 2005 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@kohlerengineparts.com by e-mail.
A timely Response was received and determined to be complete on November 28, 2005.
On or about
December 5, 2005, the National Arbitration Forum received an Additional
Submission.
On
December 7, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Edward C. Chiasson Q.C. as Panelist.
The
Respondent delivered additional material.
On
December 13, 2005, the National Arbitration Forum sent to the Administrative
Panel a copy of a December 12, 2005 supplementary submission of the Claimant.
The
parties objected to the additional material filed by each other. The Administrative Panel has reviewed and
considered all of the material and submissions of the parties.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The following information derives from the Complaint.
The Complainant is the owner of United
States trademarks and service marks, all of which incorporate the word
"KOHLER" (collectively the “KOHLER FAMILY”).
The KOHLER FAMILY represents to the worldwide consuming
public the goods and services offered by the Complainant. The Complainant has
made extensive use of the KOHLER FAMILY by providing plumbing, engines, power
systems, and other products that are marketed and sold around the world. In
addition, the Complainant manufactures and distributes the finest in furniture
and accessories, cabinetry and tile, engines and generators, as well as
maintaining resorts, recreation, and real estate opportunities.
The Complainant’s ideas, craftsmanship and technology lead
the industry in product design. With personnel and distribution operations
spanning six continents, the Complainants’ products are knit together by a
superior level of quality over a broad range of price points. Working on the
frontier of several industries, the Complainant continues to establish new
levels of excellence while maintaining its position of industry leadership to
best fulfill its mission of improving the quality of life for each person who
is touched by its products and services.
The Complainant’s business includes 44 manufacturing plants,
26 subsidiaries and affiliates and dozens of sales offices spread over every
continent except Antarctica.
The KOHLER mark has been in use for at least 130 years. Due
to the extensive use and registration of the KOHLER FAMILY around the world,
the marks in the KOHLER FAMILY have become famous under the laws of the United
States and other relevant jurisdictions. In addition, the marks in the KOHLER
FAMILY have obtained the status of notorious marks and enjoy liberal protection
under the Paris Convention.
The Respondent has no trademark or other intellectual
property rights to the subject domain name. The Respondent has no trademark
applications or registrations known to the Complainant that incorporate KOHLER.
The Respondent’s use of the KOHLER FAMILY is unauthorized by the Complainant.
The Respondent’s name does not incorporate KOHLER in any way.
The Respondent has never operated a bona fide or
legitimate business under or using the subject domain name and is not making a
protected non-commercial or fair use of the subject domain name.
When confronted by the Complainant, the Respondent asserted
that he was reselling engine parts, which he purchased from a Kohler
Distributor. Kohler Distributors do not
have the right to register a domain name containing the KOHLER mark and do not
have the right to grant any such license to an unauthorized reseller.
B. Respondent
The following information derives from the Response.
The subject domain name does incorporate the Complainants
KOHLER marks. It is similar, but not identical or confusing to the trademarks
or service marks in which the Complainant has rights. The added words “engine”
and “parts” are descriptive elements. The Respondent is being truthful in
stating what he sells: engine parts for the Complainants engines.
The Respondent has purchased engines and parts through the
Complainant’s Central Distributor and has been doing so for a number of years,
even prior to this dispute. The Respondent also is one of the largest, if not
the largest, retailer of genuine Kohler parts in the northwest of the United
States and keeps a large inventory of the Complainant’s engine parts.
The Respondent takes exception to the Complainant statement
“…Kohler Distributors do not have the right to register a domain name
containing the KOHLER mark, nor do they have the right to grant any such
license to any unauthorized reseller.” There is such a Kohler Distributor,
Guillen’s Enterprises, Inc., who has the registered domain name
KOHLERPARTS.COM. The date of registration was 10/7/1997 and they have been
actively using this website since 2001 or longer". The Respondent found
this information by using the web archive and asserts: "If that statement
is true…why has this Kohler Distributor not been brought up to the UDRP
earlier?"
The Complainant has KOHLER.COM, KOHLER.BIZ, KOHLERENGINES.COM,
KOHLERINTERIORS.COM and many other domain names to reflect its own mark.
The Respondent has been in the power equipment business for
over 30 years and in that time has carried many manufactures lines: Briggs
& Stratton, Kohler, Tecumseh, Toro, Scag and many others, for which the
Respondent sold and serviced.
The only lines that required a license or contract to sell
were whole goods: examples include mowers, trimmers, tractors, manufactures
such as Toro, Scag, etc. The requirement of others such as Briggs and Stratton,
Kohler, Tecumseh, required only authorization to do warranty service work.
Prior to closing the Respondent's previous business in 1997,
the Respondent was an authorized Kohler warranty service center. The Respondent
still has the required tools, all the required books, literature, microfiche,
software of the Complainant and has attended a number of the Complainant's
Update Schools.
When the Respondent started his online business, at no time
was he instructed or told he needed to be authorized to sell Kohler engines or
parts. This is further echoed by the Kohler Central Distributor, Power
Equipment Systems, Inc, which provides sales and support for the Complainant in
the Respondents territory. It states in a letter, “from our understanding of
the Kohler Dealer Program, it is not necessary for Mr. Coons to be established
as an authorized servicing Kohler dealer, as he does not perform or offer
warranty work. There is no authorization needed to buy or sell Kohler
Products.”
The Respondent feels he is more than qualified to meet the
most basic unlisted dealer requirements in the Complainant’s program, and would
have done so if the Respondent were instructed he needed to be, to sell the
Complainant’s products.
Over the last few years the Respondent and
KOHLERENGINEPARTS.COM have been commonly connected by all means of
communication, emails, invoices, purchases orders, phone calls, contacts,
distributor. When you contact Phil Coons you are speaking to
kohlerengineparts.com vice versa.
The Respondent has never offered for the purpose of selling,
renting, or otherwise transferring the subject domain name registration to the
Complainant.
The Respondent has not prevented the owner of the trademark
or service mark from reflecting the mark in a corresponding domain name. In
fact, the claimant has many domain names, to name a few, kohler.com,
kohler.biz, kohler.us, kohlerengines.com.
The only contact with the Complainant of which the Respondent
is aware of is a cease and desist letter received from the Complainant dated
12/31/2003 to which the Respondent replied to by email on 1/19/2004. The
Respondents attorney at that time also sent a letter dated 2/18/2004 stating
that he felt the Respondent did have rights to KOHLERENGINEPARTS.COM.
Since that that time and until now, which has been almost 2
years, the Complainant has not contacted the Respondent or the Kohler Central
Distributor with any issues pertaining to KOHLERENGINEPARTS.COM.
The Respondent has always been in contact with the Kohler Central
Distributor to any questionable content on the website and no time has the
Kohler Central Distributor ever said there were any issues. The Respondent has
purchased thousands of dollars of the Complainants products through the
marketing channels established by the Complainant. Through sales by the
Respondent, the Complainant has benefited financially. For as long as the
Respondent has been in the power equipment business it always has been the
policy that dealers or retailers, go through their Distributor for support and
that is what the Respondent has done.
The Respondent's website colors are completely different from
the Complainant's. The Respondent does not have the Complainant's logo posted.
The "contact us" shows the Respondent's address in Oregon. The free
classified is not usually found on manufactures website. The Respondent has
posted links to Complainant website.
The Respondent has removed services manuals from the website
and were not lifted from the Complainant's website. They are available through
the paid subscription parts lookup system that the Kohler Central Distributor
provides.
There also are copies of the service manuals in PDF on
software on EBay and have been for years. The Complainant has not felt the need
to stop this.
The Respondent has removed any images that might possibly
have the Complainant copyright mark and will seek legal counsel to that issue
of fair use when the Respondent has purchased the products from the
Complainants Central Distributor.
The Respondent feels this proceeding could have all been
avoided if the Complainant were to have contacted the Kohler Central
Distributor and shown the same respect as the Complainant gave the owner of
KOHLERPARTS.COM.
The Respondent always has had high regards for the Kohler
Company.
C. Additional Submissions
The following derives from the Claimant's December 5, 2005 Additional Submission.
The Respondent is holding himself
out to the public as “kohlerengineparts.com” and has adopted and is using the
Complainant's copyrights and trademarks to create and maintain the illusion
that the Respondent or the Respondent’s online store is either a division of
the Complainant or is an authorized dealer of the Complainant.
The Complainant challenges the
Respondent's statement, “…Respondent has removed any images that might possibly
have the Complainant copyright mark”.
Kohler-owned copyright protected images remain on the website associated
with the subject domain name. The
Respondent continues to use these images to assist in providing the false
impression to visiting consumers that he is the Complainant's engine part’s
division or is the Complainant's authorized dealer.
The Respondent is not merely using
a domain name containing the KOHLER mark to resell genuine KOHLER
products. The Respondent wishes himself
and his online store to become known as “kohlerengineparts.com” and is abusing
Complainant’s trademarks and copyrights in the attempt. One ingredient of that abuse is the bad
faith registration and use of a domain name containing the famous KOHLER mark
and the additional generic elements “engine” and “parts” which describe the
goods manufactured by the Complainant as well as names the division within the
Complainant that is responsible for such manufacturing.
Past administrative panel decisions in which Kohler Co. has
been a party have already rejected this notion. (See: Kohler Co. v. Chris Friedland d/b/a Faucet Direct Inc.
Claim Number: FA0207000115043; Kohler Co. v. Daniel Auer
Claim Number: FA0207000115044.)
The Respondent himself, through the inclusion of the initial
disclaimer after receipt of the Complainant’s demand and through the inclusion
of an additional disclaimer, after receipt of the Complainant’s Complaint,
tacitly admits that his actions are likely to cause confusion as to the source
or sponsorship of his services.
The parties both submitted additional comments, which the
Administrative Panel has reviewed and considered.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Both parties
referred to previous domain name dispute decisions. While these are neither
controlling nor binding on this Administrative Panel, they often are helpful
and of assistance.
It is common ground that the Complainant has rights to the word "KOHLER". The Complainant contends that the subject domain name is confusingly similar.
The Respondent asserts that the subject domain name is not
confusingly similar and states that the "added words “engine” and “parts”
are descriptive elements. Respondent is being truthful in stating what he
sells, the engine parts for the Complainants engines."
The Respondent's argument is not relevant.
The fact that he sells engine parts for the Complainant's engines has nothing to do with whether the subject domain name is confusingly similar to the Complainant's mark. Although the inquiry must be placed into a practical context, the test is objective.
The Complainant is in the engine business. It makes engines and parts for engines. Its products are sold under the mark KOHLER. A domain name that uses that mark in the context of the products the Complainant sells, engines and parts, and which incorporates those products in the domain name is confusingly similar to the Complainant's mark.
The Administrative Panel is satisfied that the Complainant has met the requirements of Policy ¶ 4(a)(i).
The Complainant points to the usual criteria for a finding that a respondent does not have a legitimate interest in the subject domain name: lack of authorization, misleading customers of the Complainant, not known by the domain name etc.
The Respondent asserts that it is in the engine parts business and that it deals with the products of the Complainant as well as the products of other engine manufacturers. The Respondent asserts that many manufacturers do not require dealers to be licensed and notes that another dealer uses a domain name similar to the subject domain name seemingly with impunity.
Whether the Respondent requires a license or other permission to sell the Complainant's products is not determinative of this issue. That inquiry is directed to the business that the Respondent is able to carry on. The issue that must be addressed in this case is not whether the Respondent can sell the Complainant's products, but whether it legitimately can use the Complainant's mark in a domain name to facilitate the sale of the Complainant's products.
Although it can be asserted that the Respondent's use of the subject domain name benefits the Complainant, the Complainant is entitled to determine how its mark is to be used and who may use it.
The Complainant objects to the Respondent's use of the Complainant's mark in the subject domain name.
Respect for the intellectual property rights of the Complainant outweighs the Respondent's interest is using those rights to promote the Respondent's ability to sell the Complainant's products. By doing so, it trespasses on the Complainant's right to control the use of its mark and confuses the marketplace.
The Administrative Panel is satisfied that the Complainant has met the requirements of Policy ¶ 4(a)(ii).
A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of another does not lead automatically to a conclusion of bad faith, but the facts that support the finding often are relevant to the bad faith inquiry.
This case engages the difficult issue of the use of another's mark for purposes that ostensibly are or could be for the benefit of the owner of the mark. Although some attempts have been made to establish principles to guide administrative panels in such inquiries, essentially each case must be considered in the context of its own facts.
The inquiry also must look at registration as well as use.
It may be difficult to conclude that the registration by a fan or fan-club of a domain name that incorporates the mark of the entity being supported is a bad faith registration, but less so where, as in this case, the object is commercial and the registration benefits the registrant.
The Respondent clearly knew of the Complainant's rights to its mark and of the significance of that mark to the Complainant and its business. While it can be argued that the registration of the subject domain name could benefit the Complainant and its business, it more likely was of greater or of equal benefit to the Respondent.
Ignoring the notorious and long-standing use of the Complainant's mark, which gives it control over use of the mark, the Respondent used the mark without the permission of the Complainant to bolster his image as a dealer of the Complainant's products.
Whether it could do so in advertising or other media is not an issue in this proceeding. What it was not entitled to do was to use the Complainant's mark to register a domain name for the use of the Respondent in its business. It follows that the use also was inappropriate.
The Administrative Panel is satisfied that the Complainant has met the requirements of Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlerengineparts.com> domain name be TRANSFERRED from the Respondent to the Complainant.
Edward C. Chiasson,
Q.C., Panelist
Dated: December 29, 2005
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